The Lanham Act, which governs trademarks, may put things more artfully, but “use it or lose it” is a fundamental aspect of trademark law, as is “use it or never get it in the first place.” That is because the U.S. Patent and Trademark Office (USPTO) won’t issue a trademark registration for a mark that isn’t being “used in commerce,” and it will cancel an existing mark if the owner does not show they actively use their mark.
Trademarks such as brand and product names, logos, slogans, and taglines are designed to identify and distinguish companies, goods, and services from others in the marketplace. If a mark is not in the marketplace, it serves no purpose other than to clutter the federal trademark register. While you can start the trademark application process based on an intent to use the mark in commerce, you still need to prove actual use before the USPTO will issue a registration.
But not every use of a trademark constitutes a “use in commerce” sufficient to support registration. If you are applying for a trademark or want to ensure the USPTO does not cancel your currently registered mark, here is what you need to prove about your use of the trademark in commerce.
“Bona Fide” Use in Commerce Required; Token Sales Won’t Cut It
Section 45 of the Lanham Act defines the term “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” The language regarding “bona fide use” was added to the law in 1998 to eliminate the practice of “token use,” or use made solely to reserve rights in a trademark. So, slapping a label containing your mark on a product and selling it to your Aunt Marie out of state for five dollars won’t cut it with the USPTO.
Goods v. Services
What constitutes bona fide use of a mark depends on whether it is being used in connection with goods or services.
- A mark is deemed to be used in commerce on goods when:
- It is placed in any manner on the goods or their containers or the displays associated with the goods or on the tags or labels affixed to them, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale.
- The goods are sold or transported in commerce.
- When used with services, a mark will be considered used in commerce when it is used or displayed in the sale or advertising of services and the services are rendered in commerce or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
How Much and What Kind of Use Is Sufficient for “Bona Fide” Use?
Aside from the preceding statutory definitions of “use in commerce,” the Lanham Act does not define what constitutes “bona fide use of a mark in the ordinary course of trade” because, as the USPTO notes in Section 901.02 of the Trademark Manual of Examining Procedure (TMEP), “use in the ordinary course of trade will vary from industry to industry.” The TMEP also cites the Senate committee that drafted the statutory intended “that the revised definition of ‘use in commerce’ be interpreted flexibly so as to encompass various genuine, but less traditional, trademark uses, such as those made in test markets, infrequent sales of large or expensive items, or ongoing shipments of a new drug to clinical investigators by a company awaiting FDA approval….”
Given the everchanging landscape of commerce, the USPTO identified factors it will consider when determining compliance with the statutory requirement for a “bona fide use of a mark in the ordinary course of trade,” including:
- The amount of use.
- The nature or quality of the transaction.
- Typical use within a particular industry.
Demonstrating use in commerce to support a trademark application requires submitting specific information and specimens to the USPTO. Given the importance of satisfying the “use in commerce” requirement, it is advisable to consult with an experienced trademark attorney to ensure your mark has the best possible chance of obtaining registration.
If you have questions about “use in commerce” or need assistance registering your trademark, please contact the trademark attorneys at The Dobrusin Law Firm.